Durán-Corretjer SLP

The Spanish Patent and Trade Mark Office (OEPM) has recently issued a communication to the Spanish Association of Industrial Property Attorneys who requested a clarification about the rumours of a new practice relating the powers of attorney for Spanish Patent applications and validations of European Patents in Spain.

OEPM, recognizing the fact that Articles 17-1 and 64 of the Implementing Regulation of the Spanish Patent Law require the filing of a power of attorney by a representative in any patent activities before the Spanish Patent and Trade Mark Office, and notwithstanding that these articles of the Implementing Regulation have not been amended, makes the interpretation that, due to the fact that Spain has signed the PLT, and taking into account that Spain waived in 2009 the need to file a power of attorney for PCT filings, extends said waiving to national patent cases on grounds of Article 2.1 of PLT.

As it is known, Article 7 of PLT indicates that a contracting party may request a power of attorney to representatives, so, in our view, a waiving of this requirement requires an amendment of the Implementing Regulation of the Spanish Patent Law, and not a simple interpretation of the Spanish Patent and Trade Mark Office.

Therefore, it is doubtful whether this waiver of powers of attorney has a legal support.

Furthermore, the filing of a power of attorney, even if not required by OEPM, might have a positive impact in the interpretation to be given to the duty of confidentiality imposed to Spanish Patent Attorneys by the law and may reinforce privilege attorney-client communications.

In conclusion, even if OEPM does not currently require the filing of powers of attorney for Spanish Patent cases, we advise to continue filing them voluntarily.

Powers of attorney can be individual (only for one case) or general (that would serve for an unlimited number of cases of the same applicant). They can be filed in original or as scanned signed copies.

Notwithstanding the above, if our clients and associates prefer not to file powers of attorney for the above Patent cases, we will be proceeding accordingly.

We are pleased to inform you that four associates of our firm have successfully passed the examinations and have qualified to become chartered Patent and Trade Mark Attorneys.

The new Attorneys are the following, in alphabetical order :

Christian Durán

César Lasanta

Alfredo Llamas

Ada Torras

Incidentally, the qualification for Patent and Trade Mark Attorney is a rather tough assignment in Spain and in the present case, only 17% of the candidates have succeeded in being accepted. We hope that this circumstance will evidence the high proficiency of these associates.

These four new Patent and Trade Mark Attorneys will be a reinforcement to the professional staff of our firm and we expect that their contribution will allow us to maintain and increase our commitment for a high quality work to be offered to our clients and associates.

The Administrative Council of the European Patent Office decided on October 16th, 2013 to amend Rules 36, 38 and 135 and to give away the existing time limits to file divisional applications of European patent applications.

Under the current system, it is possible to file a divisional application relating to any pending European patent application provided that the divisional is filed within two years from the first examination report, or from when the Examining Division first has objected a lack of unity of invention.

Under the new provisions, that will come into force on April 1st, 2014, divisional applications could be filed at any time while the European Patent application is pending.

The new Rules will apply to any divisional application filed on or after April 1st, 2014 even in those cases where the earlier two year term has already expired.

The new rules will establish an additional filing fee for any divisional application filed as from April 1st, 2014. The amount of this fee is not yet known but it is provided that its amount will grow with each subsequent generation of divisional applications.

At the light of those changes our recommendation to our clients with pending applications is that:

1.- Since the new rules will reopen the possibility to file divisionals on cases which, under the present regime, the term has already expired, it might be advisable to delay the grant of any pending European Patent application on which divisionals would have to be filed until April 1st, 2014.

2.- In order to avoid having to pay the additional fee for second or later generations of divisionals, it is advisable to file any divisionals before April 1st, 2014, if the two year term to do it under the current regime has not yet elapsed.

The Industrial Property firm Durán-Corretjer organizes, in collaboration with the American firm Ratner Prestia, a Seminar on the new U.S. patents act (America invents act) and its comparison with the European system, to be held on October 28, 2013 from 9:00 to 13:30, and will be presented by the U.S. General Consul in Barcelona, according to the following program, which will be held in Room B of the Foment del Treball Nacional building located at Via Laietana 32-34 in 080003 Barcelona.
Registration is free, but is indispensable to attend the seminar, given the access control systems of the venue where the event will take place.
Seminar Language: English.
To register click on this link.

ITC has dismissed the complaint filed by a patentee against thirteen defendants finding that the complainant had not satisfied its burden of meeting the ITC’s domestic industry requirement.

This decision that involved one of our clients as a defendant represents a substantial victory for the 13 defendants and it is the first in an ITC investigation held under the ITC new pilot program for expedited resolution, and demonstrates the value of effective case analysis, and definition and implementation of appropriate strategies.

On July 1st, 2013 the European Union will experience its 7th expansion since the creation of the European Community in 1957, with the incorporation of Croatia.
As a consequence, all  Community Trade Marks and European Community Designs will automatically extend to said Member State.
 
Therefore, the scope of protection of a Commmunity Trade Mark, Industrial Design expands to one more country, being 28 Member States which will be protected with a single registration.

Our firm once more, appears as one of the most important firms in the field of Trade Mark and Patent prosecution in Spain, according to the British magazine Managing Intellectual Property (MIP), which is the result of an international survey that establishes a ranking of the firms on Industrial and Intellectual Property around the world.

Our firm will be represented at the Annual Meeting of the International Trademark Association (INTA) that takes place in Dallas (USA) from the 4th to the 8th of May 2013 by the lawyer Christian Durán.

The European Commission has published their proposals for the amendment of the Regulation on the Community trade mark and of the Directive for harmonisation of the legislation on trade marks of member states of the European Union.      

These proposals form part of the process of revision of the functioning of the trade mark system in Europe decided by the Council of the European Union.  Now these proposals will have to be discussed with the interested circles and the member states of the European Union.

On April 16, 2013 the Court of Justice of the European Union has decided the dismissal of the appeals filed by Spain and Italy against the decision of the Council of the European Union authorizing an enhanced cooperation in the area of the creation of a unitary patent protection in the European Union.

The decision dismisses among others, the argument that patents are subject-matter excluded from the scope of enhanced cooperation because being of the exclusive competence of the European Union.  In this connection, the Court points out that patents do not constitute rules of competition, this being in contradiction with the general doctrine in this field and with what is being indicated in the decision authorising  enhanced cooperation, particularly when the latter I refers to the fact that the creation of a unitary patent protection would ensure the possibility for undertakings, throughout the Union to improve their competitiveness by having the choice of seeking uniform patent protection.  Obviously, patents grant exclusive rights that impact on competitors by excluding them for exploiting the subject-matter of the patent.

As it is known, Spain has filed an appeal against the Regulations on the unitary patent that will have to be decided by the European Court of Justice.